Trademark- Meaning, History, Definition and Registration

8/10/2019 Trademark- Meaning, History, Definition and Registration

1/24

Trademark: Meaning, Historical background, Definition andIts Registration

A "trademark for commercial goods" necessarily requires commercial goods; in societiesbased on the barter system, therefore, there was no basis for "trademarks for goods."Trademarks not only identify goods, but create a distinction between goods fromvarioussources. Consequently, a competitive relationship exists, and an overly simplistic mark isinsufficient to be a trademark. The trade of goods came into practice long ago,and the useof trademarks is thought to have evolved from that.

Purpose of Trademark Law

Trademark law, by preventing others from copying a source-identifying mark, 'red

uce[s] thecustomer's cost's of shopping and making purchasing decisions,' for it quickly and easilyassures a potential customer that the this item -- the item with this mark -- ismade by thesame producer as other similarly marked items that he or she liked (or disliked)in the past.At the same time, the law helps assure a producer that it (and not an imitatingcompetitor)will reap the financial, reputation-related rewards associated with a desirableproduct.

In short, trademark law is about informed purchasing decisions and commercial morality.

Functions of Trademark

Under modern business condition a trade mark performs four functions:

. It identifies the goods / or services and its origin.

. It guarantees its unchanged quality

. It advertises the goods/services

. It creates an image for the goods/ services.

Historical Background of Trademark

The origin of trademarks can be traced back as far as the beginning of the circulation ofgoods. The history of marks is nearly as old as the histories of mankind and rel


2/24

igion.Scientists have come across excavated artefact from places such as ancient Egyptwithvarious symbols carved thereon for religious and superstitious reasons. "Pottersmarks"appeared in relics left from the Greek and Roman periods and were used to identify themaker (potter) of a particular vessel). Among those who specialize in researching thecultural heritage of marks, the studies surrounding "potters marks" are famous.It would bedifficult, however, to say that these marks are trademarks in the sense of the modernmeaning.

Over time, different methods of identification and distinction developed. Lovedones andpets were given names. "Proprietary marks" (in the form of a name or symbol) were affixedto goods to enable one person to distinguish their own possessions from those ofothers.Craftsmen applied their names, unique drawings, or simple inscriptions to identify goodsthey created. Even though these marks surely helped in distinguishing goods, it

is difficultto say that these marks were trademarks with distinctiveness in the modern senseof theword. Symbols on goods used in ancient Rome and other countries near the Mediterraneansea had similar characteristics to the trademarks of today. Because this ancientregion is


3/24

considered to be the first to actively circulate goods, it is widely thought that trademarksevolved in response to the emergence of a society in which goods circulate in commerce.However, even in those days, a trademark system based on property rights did notyet exist.

Around the 10th century, a mark called a "merchants mark,"appeared, and symbols amongtraders and merchants increased significantly. These marks, which can be considered onekind of "proprietary mark," essentially were used to prove ownership rights of goods whoseowners were missing due to shipwrecks, pirates, and other disasters. Even now, in everypart of the world, horses, sheep, and other animals are still branded with a mark identifyingthe owner. In Japan, a symbol is affixed to lumber that is tied onto a raft andsent down ariver to its mouth. These types of marks are reminiscent of the "merchant's mark" of the

past.

In guilds of the middle ages, craftsmen and merchants affixed marks to goods inorder todistinguish their work from the makers of low quality goods and to maintain trust in theguilds. These marks, known as "production marks," served to punish the manufacturers oflow quality goods for not meeting the guild's standards and to maintain monopolies by theguild's members. These production marks helped consumers to identify and assignresponsibility for inferior products, such as, goods short in weight, goods comprised of poor

quality materials, and goods made with inferior craftsmanship.

TRADEMARK LAWS IN INDIA

While some form of proprietary protection for marks in India dates back severalmillennia,Indias statutory Trademarks Law dates back to 1860. Prior to 1940 there was no officialtrademark Law in India. Numerous problems arouse on infringement, law of passingoff etcand these were solved by application of Section 54 of the Specific Relief Act 1877 and theregistration was obviously adjudicated by obtaining a declaration as to the owne

rship of atrademark under Indian Registration Act 1908.

To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940, thiscorresponded with the English Trademarks Act. After this there was an increasingneed formore protection of Trademarks as there was a major growth in Trade and Commerce.


4/24

Thereplacement to this act was the Trademark and Merchandise Act 1958.This Act wastoprovide for registration and better protection of Trademarks and for preventionof the use offraudulent marks on merchandise. This Law also enables the registration of trademarks sothat the proprietor of the trademark gets legal right to the exclusive use of the trademark.The objective of this act was easy registration and better protection of trademarks and toprevent fraud.

The reappellation of the Trademarks and Merchandise Act gave rise to the Trademark Act1999; this was done by the Government of India so that the Indian Trademark Lawis incompliance with the TRIPS obligation on the recommendation of the World TradeOrganisation. The object of the 1999 Act is to confer the protection to the userof thetrademark on his goods and prescribe conditions on acquisition, and legal remedies for

enforcement of trademark rights. It will for the first time protect service marks and giveprovision of registration for collective marks, it will also differentiate between well knowntrademarks and trademarks in general, and also special treatment and rights areenvisagedfor well known trademarks. The act of 1999 also gives police the right to arrestin case ofinfringement. There are some points of changes that are present between the 1958act and


5/24

1999 act, it can be said that the 1999 act is a modification of the 1958 act, ithas providedexhaustive definitions of terms frequently used, enhanced punishment for offenders,increased the period of registration, registration of non- traditional trademarks. The rules ofthis act are called as Trademark Rules 2002. Both the Act and its set of rules came to effecton September 15th 2003. The trademark act 1999 and its trademark rules 2002 presentlygovern Indian Trademark Laws in India. Laws of trademarks are based on distinctivenessand deceptive similarity. If distinct signs are freely used the brand equity created by oneperson will be freely used by another. The value of distinctive sign depends onsales volumeand public association of sign with quality.

Madrid Protocol

India Parliament has passed the Trade Marks (Amendment) Act for enacting special

provisions relating to protection of trademarks through international registration under theMadrid Protocol. As per the Amendment Act, from the date of the international registrationof a trademark where India has been designated or the date of the recording in the register ofthe International Bureau about the extension of the protection resulting from aninternationalregistration of a trademark to India, the protection of the trademark in India shall be thesame as if the trademark had been registered in India.

Meaning and definition of Trademark:

A trademark is any word, name, symbol, or device capable of distinguishing the goods orservices of one person from those of others, and may include shape of goods, theirpackaging and combination of colours. Trade Mark includes a brand name, a housemark,and a service mark. A trademark may be an insignia, label, name, sign, logo, device,signature, numerals, packaging, shape of goods, colour combination etc. In otherwords, atrademark is a visual symbol used in relation to any goods or services to indica

te some kindof trade connection between the goods and services and the person using the mark. Itusually identifies the product and acknowledges its unchanged quality and helpsto advertisethe product. This gives the consumer satisfactory assurance of the quality of the article he isbuying. Their duration is not limited and they may last forever, subject to renewals at properintervals. Priority of right is determined by who first used the mark within the


6/24

particulargeographic area. In those countries, which recognize common law rights, use of amarkcommercially must be demonstrated before grant of registration of the mark. If they are notproperly used and protected, it becomes difficult to be enforced against misuse.

Brands today are demonstrably the most powerful and sustainable wealth creatorsin theworld. Therefore, a brands future needs to address how to be better, stronger, moredistinctive and more valued. The definition of a brand is probably more complextoday thanit has ever been. People have more choice today than they ever had before. So, the brandmust be, so to say, a bridge of trust to the consumer. Trust is undoubtedly thefuture of abrand. A brand has to be customer-friendly. There are many characteristics shared by thestrongest brands today, the most critical of which are clarity, consistency andleadership.

Around the world, millions of dollars are spent every year in building a strongbrand.

A brand is the identity of a product and assures of a pre-sold quality. Corporate image isnow a days being treated as a brand. It is the net result of interaction of all experiences,interaction of belief and knowledge that people have about the company, and manyproductshave names synonymous with the brand names. A brand thus generates the goodwillof the

company also and, therefore, needs to be protected. Goodwill is generated as thebusiness is


7/24

carried on and is augmented with the passage of time, and it is the mechanical quality of aparticular trade, which attracts the customers. Goodwill has become a componentof thetotal value of an undertaking that is attributable to earn profits. Therefore, brand protectionbecomes inevitable in the present day scenario.

PROTECTION OF TRADEMARKS IN INDIA

Trademarks which are applied to goods and Service marks are applied to servicesareprotectable in India apart from Certification marks, which indicate that particular productsor services meet the standards set by the certifier. Well-known marks are also grantedprotected in India, though most countries protect only trademarks and service marks. Indiaalso recognizes trademark rights under the Common law. Such rights are acquired,throughuse of a trademark in commerce and registration is not mandatory. Common law rig

htsextend to a geographic area, in which the trademark owner carries on his business under hismark in relation to products or services to which the mark is applied.

Priority of right is determined by who first used the mark within a particular geographicarea. In countries, like India, which recognize common law rights, use of a markincommerce has to be proved before registration of the mark can be granted. In thosecountries that do not recognize common law trademark rights, such rights can beacquired

only through registration.

Before we examine the definition of trade markit will be expedient to peruse thedefinition of mark.

A markhas been defined in Section 2 (1) (m) as follows:

markincludes a device, brand, heading, label, ticket, name, signature, word, letter,numeral, shape of goods, packaging or combination of colours or any combinationthereof.

Section 2 (1) (zb) of the Trade Marks Act, 1999 defines, trade markas follows:

trade markmeans a mark capable of being represented graphically and which is capableof distinguishing the goods or services of one person from those of others and may includeshape of goods, their packaging and combination of colours; and (ii) in relationto otherprovisions of this Act, a mark used or proposed to be used in relation to goods


8/24

or servicesfor the purpose of indicating or so to indicate a connection in the course of trade betweenthe goods or services, as the case may be, and some person having the right either asproprietor or by way of permitted user to use the mark whether with or without anyindication of the identity of that person , and includes a certification trade mark or collectivemark.

Thus, the definitions of markand trademarklist specific examples of marks which mybe registered as trademarks. However, both these definitions are inclusivedefinitions andnot exhaustive.

To constitute a trade markcapable of being registered under the Trade Marks Act 1999the following conditions should be fulfilled:

i. it must be a mark as defined in Section 2 (1) (m);ii. it must be capable of being represented graphically; andiii. it must be capable of distinguishing the goods or services of one person fr

om those ofothers;

Essentials of a trade mark

From the above definitions, the following essential ingredients emerge for constituting atrade mark under the 1999 Act:

a. it must be a "mark";


9/24

b. it must be capable of being represented graphically;c. it must be capable of distinguishing the goods or services of one person fromthose ofothers;d. it must be used or proposed to be used in relation to goods or services;e. there must be a visual representation of the mark;f. use of the mark in relation to goods must be upon or in physical or in any otherrelation whatsoever to the goods; and in relation to services, it must be used as a partof any statement about the availability, provision or performance of such service; andg. the objective of use of the mark should be to indicate a connection in the course oftrade between the goods or services, and some persons having the right to use themark either as proprietor or by way of permitted use. It is not necessary to reveal theidentity of the person using the mark.

Capable of being represented graphically

The graphic representation must be able to show the mark. It is important that the TradeMarks Registry should know what is comprised in the mark so that it can be published inthe Trade Marks Journal and also be capable of being entered in the register oftrademarksmaintained by the Registry which can be easily accessed. Any one intending to conduct asearch of a register of trademark or a pending application must be able to knowwhat themark is. There has to be a "a graphic representation in which the identity of th

e relative signis clearly and unambiguously recorded... it seems clear that a sign (such as sound or aroma)can be taken to have been represented graphically with the required degree of precisionwhen figuratively represented, even though, interpretation or analysis may thenbe requiredto detect or demonstrate use of it.

Shape of goods

Prior to the 1999 Act, the "shape of goods" could have been protected as a design only

under the provisions of the Designs Act 1911 if it was "new" or "original". Theduration ofthe statutory protection available to a design has thus been enlarged by virtueof itsinclusion in the definition of trade mark under the 1999 Act. By this mechanism,there isalso an attempt to recognize the de facto monopoly in the market place. Under section 9(3)of the 1999 Act, a mark shall not be registered as a trade mark, if it consistsexclusively of:


10/24

a. the shape of goods that results from the nature of the goods themselves;b. the shape of goods that is necessary to obtain a technical result; orc. the shape that gives a substantial value of the goods.

The scope of the provision contained in section 9(3)(c) quoted above is really broad. In thecase of Philips Electronic BV v Remington (1998 RPC 283), it was held that thisrestrictionshould apply to a shape which exclusively adds value to the goods (design or functionalappearance) and one should disregard a value attributable to a trade mark function (ie.source indication).

Combination of colours

Under the provisions of the Trade and Merchandise Marks Act 1958, a trade mark could belimited wholly or in part to one or more specified colours, and any such combination had tobe taken into consideration by the tribunal having to decide on the distinctivecharacter of

the trade mark. Whether any colours or a combination thereof can be construed asa trademark would depend upon whether it has acquired any secondary meaning or a de factomonopoly in the market place.

The judgment of the Delhi High Court in the matter of Colgate Palmolive CompanyandAnr v. Anchor Health and Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del), wherein itwas


11/24

held that if the get up of goods, size, shape and labels and wrappers is deceptively similar,then the concept is identified as trade dressand if the goods are offered in suchdress to thepublic, then such shape and size can be protected as an identifiable concept ofa trademark.

Well-known Trademark and Trans Border Reputation

India recognises the concept of the Well-known Trademarkand the Principle of TransBorder Reputation. A well-known Trademark in relation to any goods or services means amark that has become so to the substantial segment of the public, which uses such goods orreceives such services such that the use of such a mark in relation to other goods andservices is likely to be taken as indicating a connection between the two marks.

Trans Border Reputation concept was recognised and discussed by the Apex IndianCourt in

the landmark case of N. R. Dongre v. Whirlpool (1996) 5SCC 714. The TrademarkWHIRLPOOLwas held to have acquired reputation and goodwill in India. The MarkWHIRLPOOLwas also held to have become associated in the minds of the public withWhirlpool Corporation on account of circulation of the advertisements in the magazinesdespite no evidence of actual sale. Hence, the trademark WHIRLPOOL was held to haveacquired trans-border reputation which enjoys protection in India, irrespectiveof its actualuser or registration in India.

Statutory Protection of Well-known Trademark

The Trademarks Act was introduced in India in 1999 and came into effect on 15thSeptember 2003. One of the changes that have been brought about by the Act is that it givesstatutory protection to well-known Trademarks which were earlier protected undertheCommon law.

Before having a look at how the Common law granted protection to well- known trademarkstill now, let us first examine the statutory protection conferred by the Act.

Section 11(6) and 11(7) deal with the facts that the Registrar will take into consideration,

while determining that the mark is a well-known mark,

1. The knowledge or recognition of the alleged well known mark in the relevant sectionof the public including knowledge obtained as a result of promotion of the trademark2. The duration, extent and geographical area of any use for that trademark.3. The duration, extent and geographical area for any promotion of the trademarkincluding advertising or publicity and presentation at fairs or exhibition of th


12/24

e goodsor services in which the trademark appears.4. The duration and geographical area of any registration of any publication forregistration of that trademark under this Act to the extent that they reflect the use orrecognition of that trademark.5. The record of successful enforcements of the rights in that trademark, in particularthe extent to which the trademark has been recognized as a well known trademarkbyany Court or Registrar under that record.6. The number of actual or potential consumers of the goods or services7. The number of persons involved in the channels of distribution of the goods orservices.8. The business circle dealing with the goods and devices to which the trademarkapplies

Whereas a trademark has been determined to be well known in at least one relevant sectionof the public in India by any court or Registrar, the Registrar shall consider t

hat trademarkas a well-known trademark for registration under this Act.


13/24

In addition to this there are several facts that are not to be taken in to consideration by theRegistrar in determining the well-known trademark.

These are as follows:-

1. The Trademark has been used in India2. The Trademark has been registered3. The application for registration of the Trademark has been filed in India.4. The trademark is well known in or has been registered in, or in respect of which anapplication for registration has been filed in any jurisdiction other than Indiaor5. The trademark is well known to the public at large in India

Section 11(10) deals with various aspects in relation to the Protection of wellknowntrademarks. It states:-

While considering an application for registration of a trademark, and oppositionfiled inrespect thereof, the Registrar shall:

1. protect a well known trademark against the identical or similar trademark, and2. take into consideration the bad faith involved either of the applicant or theopponentaffecting the rights relating to the trade mark.

However, it is also stated that if a trademark has been registered in good faithdisclosing thematerial information to the Registrar of where right to a trademark has been acquiredthrough use in good faith before the commencement of the Trade Marks Act, 1999,

then thevalidity of the registration of the trademark or right to the use of that trademark will not beprejudiced on the ground that such mark is identical or similar to a well knowntrademark.

Section 11 of the Trade Marks Act provides for facts to be considered while establishing awell known trademark, protection of a well known trademark and protection of marksregistered in good faith viz. a viz. well known trademarks.

Non-traditional trademarks

. Appearance: Depending on the jurisdiction, this type of mark may include the coloror combination of colors applied to the products themselves or to the packaginginwhich they are sold. In the case of services, it could include the visual appearance,externally or internally, of a store or restaurant or, for instance, the designof a menu.The appearance of products, packaging or services is frequently referred to as t


14/24

radedress.. Moving Images, Holograms and Gestures:

This type of mark includes moving images, which can combine colors, sounds andaspects of product designs. In certain jurisdictions, the motion of the Lamborghinicar doorhas been given protections as a motion trademark, because of the uniquemovement of the door as it is opened or closed.

The moving image can be a film clip, video, moving logo for TV shows, etc. The UKhas registered a moving mark for Kraft Foods UK Ltd. The mark has a descriptionwhich says: "The mark consists of the three-dimensional shape breaking apart, asshown in the sequence of still pictures attached to the form of application"

. Shape: This type of mark may be a three-dimensional representation of the productitself; the container for the product; or the architectural design of a store orsignpost,

such as McDonalds Golden Arches. It may be the shape of a label or tag rather thansimply the words or colors appearing thereon.


15/24

. Sound: This type of mark may be a jingle or a piece of music or other sound, such asthe roar of the MGM lionor the Tarzan yell.It may be a short extract from acomposition or an entire musical piece. In some cases, it may be a reproductionof aneveryday sound, perhaps in an unusual circumstance.

For sound marks, there have been alternate methods for the graphical representationof sounds. These include depictions by oscillogram, spectrum, spectrogram, andsonogram.

The first sound mark was registered in August 2008 by Yahoo! Inc. for its famous"yodel". The mark was filed under Class 35 (advertising, business management,business administration, office functions); Class 38 (telecommunications) and Class42 (providing for food and drink; temporary accommodation; medical, hygienic andbeauty care; veterinary and agricultural services, legal services, scientific andindustrial research; computer programming; services that cannot be classified in

other classes) for its range of email, business and internet services.

Smell/Scent: Although specific smells may be associated with particular goods orservices, not all of them are protectable as trademarks, because they are functional.For example, the scent of perfume is considered functional. In other cases, a scent isapplied or added to a product, and it is not the natural smell of the product itself anddoes not serve a functional purpose. For instance, in the United States, a cherry scent

for synthetic lubricants for high-performance racing and recreational vehicles isregistered on the Principal Register.

The United Kingdom.s first smell mark was granted to Japan.s Sumitomo RubberCo. in 1996 for a floral fragrance of roses as applied to tyres. The mark was latertransferred to Dunlop Tyres. A Dutch company.s tennis balls with the scent of newlymown grass, and Unicorn Products. (a London-based maker of sports equipment)smell mark for darts with the strong smell of bitter beer, are some examples wheresmell marks have been successfully registered.

Taste: Some jurisdictions permit the registration of taste as a mark, but they oftenrequire that the taste be represented graphically and, of course, that it servethepurpose of a trademark. In many cases it will be difficult to distinguish between thenatural flavor of a product and the recipe adopted by a manufacturer to distinguish itsgoods from those of competitors. Even when the taste is not protected by a trade


16/24

markregistration, such recipes often are closely guarded trade secrets. Taste marksare alsoreferred to as gustatory marks.

Registration of Trademark

A person who claims to be the proprietor of the trademark can apply for the registration ofits mark for goods as well services.

A person may apply for registration of a trade mark to the Trademark office under whosejurisdiction the principal place of the business of the applicant in India falls.In case, the principal place of business is outside India, then the applicationcan be filed inthe Trademark office under whose jurisdiction the office of the lawyer appointedby you islocated.

In case of a company about to be formed, anyone may apply in his name for subseq

uentassignment of the registration in the company's favour.

Before making an application for registration it is prudent to conduct a trademark search inthe Trademark office in context of the already registered trademarks to ensure that


17/24

registration may not be denied in view of resemblance of the proposed mark to anexistingone or prohibited one.

Applications for registration of trademarks are to be filed in the prescribed manner. Anyperson claiming to be the proprietor of a trade mark used or proposed to be usedby him;who is desirous of registering it, shall apply in writing to the Registrar in the prescribedmanner for the registration of his trademark.

An application to the Registrar for the registration of a trade mark shall be signed by theapplicant or his agent. An application to register a trade mark for a specification of goods orservices included in any one class shall be made in Form TM-1. An application toregister atrade mark for a specification of goods or services included in any one class from aconvention country shall be made in Form TM-2. A single application for the regi

stration ofa trade mark for different classes of goods or services from convention countryshall bemade in Form TM-52.

Every application for registration of a trade mark shall, except as hereinafterprovided, bemade in triplicate and shall be accompanied by five additional representations of the mark.The representations of the mark on the application and each of its copies and the additionalrepresentations shall correspond exactly with one another. The additional representations

shall in all cases be noted with the specification and class or classes of goodsor services forwhich registration is sought, the name and address of the applicant, together with the nameand address of his agent, if any, the period of use, if any, and such other particulars as mayfrom time to time be required by the Registrar and shall be signed by the applicant or hisagent.

An application for the registration of a trade mark for goods or services shall-

a) Explain with sufficient precision, a description by words, of the trade markifnecessary, to determine the right of the application;b) Be able to depict the graphical representation of the trade mark;c) Be considered as a three dimensional trade mark only if the application contains astatement to that effect;d) Be considered as a trade mark consisting of a combination of colours only iftheapplication contains a statement to that effect;


18/24

Grounds of Refusal

Trade Marks Act, 1999, Section 9 and Section 11 give the grounds for refusal oftheapplication. Where Section 9 mentions the absolute grounds, Section 11 provideswith therelative grounds of refusal of the application.

The following categories of marks are excluded from registrability as a trade mark:

i) Which are devoid of any distinctive character, that is to say, not capable ofdistinguishing the goods or services of one person from those of another person;[Section 9(1)(a)].ii) ii) Which consist exclusively of marks or indications which may serve in trade to

designate the kind, quality, quantity, intended purpose, values, geographicalorigin or the time of production of the goods or rendering of the service or othercharacteristics of the goods or service; [Section 9(1)(b)].iii) Which consist exclusively of marks or indications which have become customary inthe current language or in the bona fide and established practices of the trade;[Section 9(1)(c)].


19/24

Unless in (i) (ii) and (ii) hereinabove, the mark has acquired a distinctivecharacter as a result of the use made of it or is a well-known trade mark beforethedate of application for registration. [Proviso to Section 9(1)]. For the sake ofready reference, the definition of well-known trade markcontained in Section2(1)(zg) is set out below:

Well-known trade markin relation to any goods or services means a markwhich has become so to the substantial segment of the public which uses suchgoods or receives such services that the use of such mark in relation to othergoods or services would be likely to be taken as indicating a connection in thecourse of trade or rendering of services between those goods or services and aperson using the mark in relation to the first -mentioned goods or services.

iv) It is of such nature as to deceive the public or cause confusion; [Section 9(2)(a)].v) It contains or comprises of any matter likely to hurt the religious susceptibilities ofany class or section of the citizens of India; [Section 9(2)(b)].vi) It comprises or contains scandalous or obscene matter; [Section 9(2)(c)].vii) Its use is prohibited under the Emblems and Names (Prevention of Improper Use)

Act, 1950; [Section 9(2)(d)].viii) If it consists exclusively of:a) the shape of goods which results from the nature of the goods themselves; orb) the shape of goods which is necessary to obtain a technical result; orc) the shape which gives substantial value to the goods. [Section 9(3)].ix) If because of:a) its identity with an earlier trade mark and similarity of goods or services coveredby the trade mark; orb) its similarity to an earlier trade mark and the identity or similarity of goods orservices covered by the trade mark, there exists a likelihood of confusion on the

part of the public, which includes the likelihood of association with the earliertrade mark. [Section 11(1)].x) A trade mark which:a) is identical with or similar to an earlier trade mark; andb) is to be registered for goods or services which are not similar to those forwhichthe earlier trade mark is registered in the name of a different proprietor, shall notbe registered if or to the extent the earlier trade mark is a well-known trademarkin India and the use of the later mark without due cause would take unfairadvantage of or be detrimental to the distinctive character or repute of the ear

liertrademark. [Section 11 (2)].xi) A trade mark shall not be registered if, or to the extent that, its use in India is liableto be prevented:a) by virtue of any law in particular the law of passing off protecting an unregisteredtrade mark used in the course of trade; orb) by virtue of the law of copyright. [Section 11 (3)].xii) No word:


20/24

a) which is the commonly used and accepted name of any single chemical elementor any single chemical compound (as distinguished from a mixture) in respect ofa chemical substance or preparation, orb) which is declared by the World Health Organisation and notified in the prescribedmanner by the Registrar from time to time, as an international non-proprietaryname or which is deceptively similar to such name. [Section 13].


21/24

xiii) Where an application is made for the registration of a trade mark which falselysuggests a connection with any living person, or a person whose death took placewithin twenty years prior to the date of application for registration of the trademark. [Section 14].

Honest Concurrent User

The trademark law allows the trademark of an honest and concurrent user to coexist withanother similar mark. The defense of honest concurrent user came into being through thecases of Dent v. Turpin and Southorn v. Reynolds.

In John Fitton & Co. the following five factors were laid down in order to havesuccess inhonest concurrent user defense.

1. The extent and use in time and quantity and the area of the trade.2. The degree of confusion likely to ensue from the resemblance of the marks whi

ch isto a large extent indicative of the measure of public inconvenience.3. The honesty of the concurrent use.4. Whether any instances of confusion have in fact been proved, and5. The relative inconvenience which would be caused if the mark were registered,subject if necessary to any conditions and limitations.

Section 12 of the TM Act in accordance with the aforementioned rationale provides for the

registration of a trademark in case of its honest concurrent use by providing that In the caseof honest concurrent use or of other special circumstances which in the opinionof theRegistrar, make it proper so to do, he may permit the registration by more thanoneproprietor of the trade marks which are identical or similar (whether any such trade mark isalready registered or not) in respect of the same or similar goods or services,subject to suchconditions and limitations, if any, as the Registrar may think fit to impose.

Classification of goods and services

For the purpose of classification of goods and services for registration of trademarks, Indiafollows the International Classification of Goods and Services (Nice Classification)published by World Intellectual Property Organization (WIPO). For the purpose ofclassification of the figurative elements of marks, India follows the Vienna Agr


22/24

eement.

Opposition proceedings

After advertisement of a trademark in the Trade Marks Journal, (which is available online atthe website of Office of Registrar of Trademarks) an opposition challenging theapplicationfor registration can be filed by any person within a period of 3 months (which may beextended by a period not exceeding 1 month).

Renewal of registration

The trademark is initially registered for a period of 10 years, which is calculated from thedate of filing of the application and in case of convention application, from the date ofpriority. The registration is required to be renewed within 6 months before thedate of expiryof the registration, i.e., 10 years from the date of the application or subsequent renewals.

The failure in renewing the trademark within the stipulated period of time and a

graceperiod of maximum 1 year granted for restoration of the trademark, automaticallyleads toremoval of the trademark from the Register of Trademarks.

Rectification of Trademark

An aggrieved person may file an application before the Registrar of Trademarks or to theIntellectual Property Appellate Board (IPAB) for cancellation or varying the registration of


23/24

the trademark on the ground of any contravention or failure to observe a condition enteredon the Register in relation thereto.

The application for rectification can also be filed for removal of an entry madein Register,without sufficient cause or wrongly remaining on the Register and for correctionof anyerror or defect in any entry in the Register.


24/24

Documents

Trademark- Meaning, History, Definition and Registration